United States District Court, D. New Jersey
before the Court is Defendants Mylan Pharmaceuticals Inc.,
Mylan Inc., and Mylan N.V.'s (collectively,
“Mylan” or “Mylan Defendants”) motion
to dismiss for improper venue, lack of subject-matter
jurisdiction, and failure to state a claim under Federal
Rules of Civil Procedure 12(b)(3), 12(b)(1), and 12(b)(6),
respectively. (D.E. No. 56). The Court has considered the
parties' submissions and decides the matter without oral
argument. See Fed. R. Civ. P. 78(b). For the
following reasons, Mylan's motion is DENIED without
Improper Venue under Rule 12(b)(3)
seeks dismissal for improper venue under Rule 12(b)(3). (D.E.
No. 56-1 (“Mylan Mov. Br.”) at 1). Courts are
divided on which party bears the burden on a Rule 12(b)(3)
motion in a patent case. Compare Galderma Labs., L.P. v.
Teva Pharm. USA, Inc., No. 17-1076, 2017 WL 6505793, at
*3 (N.D. Tex. Nov. 17, 2017) (plaintiff bears the burden),
with Mallinckrodt IP v. B. Braun Med. Inc., No.
17-365, 2017 WL 6383610, at *2 (D. Del. Dec. 14, 2017) (party
opposing venue bears the burden); see also 14D
Wright & Miller, Federal Practice & Procedure §
3826 (4th ed. 2017) (“There are many
cases-predominantly, but not exclusively, from the Third and
Fifth Circuits-holding that the burden is on the objecting
defendant to establish that venue is improper, because venue
rules are for the convenience and benefit of the
argues that Federal Circuit law governs the burden-of-proof
inquiry. (D.E. No. 110 (“Mylan Reply Br.”) at
6-7). Mylan relies on Federal Circuit precedent
a procedural issue that is not itself a substantive patent
law issue is nonetheless governed by Federal Circuit law if
the issue pertains to patent law, if it bears an essential
relationship to matters committed to [the Federal
Circuit's] exclusive control by statute or if it clearly
implicates the jurisprudential responsibilities of [the
Federal Circuit] in a field within its exclusive
(Id. at 6) (citing Midwest Indus. v. Karavan
Trailers, 175 F.3d 1356, 1359 (Fed. Cir. 1999)).
According to Mylan, § 1400(b) is a patent-specific
statute, which triggers the application of Federal Circuit
law. (See Id. at 6-7). And in Mylan's view,
Federal Circuit law places the burden as to venue on the
plaintiff. (Id. at 7) (citing Hoover Grp., Inc.
v. Custom Metalcraft, Inc., 84 F.3d 1408, 1410
(Fed. Cir. 1996)).
argues that Third Circuit law governs the burden-of-proof
inquiry. (D.E. No. 88 (“Celgene Opp. Br.”) at 3).
For support, Celgene relies on several cases,  including a
post-TC Heartland Hatch-Waxman case from
this Circuit. (See id.) (citing BMS, 2017
WL 3980155, at *5 (holding that the law of the regional
circuit controls who bears the burden, and explaining that
under Third Circuit law, the burden is on the defendant to
prove improper venue)).
the parties briefed Mylan's motion, other district courts
in the Third Circuit followed the reasoning in BMS
and applied Third Circuit law to determine-as a procedural
matter-which party bears the burden on a venue challenge in a
patent case. See Koninklijke KPN N.V. v. Kyocera
Corp., No. 17-87, 2017 WL 6447873, at *2 (D. Del. Dec.
18, 2017). The Court will follow the reasoning in
BMS and hold that “the issue of which party
bears the burden of proof on a venue challenge is a
procedural, non-patent issue controlled by the law of the
regional circuit.” See 2017 WL 3980155, at *4.
Thus, Mylan-as the party opposing venue- bears the burden
here. See Great W. Mining & Mineral Co., 434 F.
App'x at 86 (3d Cir. 2011).
in a patent case is governed exclusively by a special
patent-venue statute, which provides that, “[a]ny civil
action for patent infringement may be brought in the judicial
district where the defendant resides, or where the defendant
has committed acts of infringement and has a regular and
established place of business.” 28 U.S.C. §
1400(b); see TC Heartland LLC v. Kraft Foods Grp. Brands
LLC, 137 S.Ct. 1514, 1515 (2017); see also In re
Cray, 871 F.3d 1355, 1360 (Fed. Cir. 2017) (holding that
“Federal Circuit law, rather than regional circuit law,
governs [the] analysis of what § 1400(b)
requires.”). Thus, Mylan must demonstrate that (1) it
does not “reside” in New Jersey and (2) it either
(a) has not committed “acts of infringement” in
New Jersey, or (b) does not have a “regular and
established place of business” in New Jersey. See
BMS, 2017 WL 3980155, at *5-6. In other words, if Mylan
“resides” in New Jersey, then venue is proper
here. If Mylan does not “reside” in New Jersey,
but has committed “acts of infringement” in New
Jersey and has a “regular and established
place of business” in New Jersey, then venue is proper
Does Mylan “Reside” in New Jersey?
§ 1400(b), a defendant that is a domestic corporation
“resides” only in its state of incorporation.
See TC Heartland, 137 S.Ct. at 1517. Mylan asserts
that it does not “reside” in New Jersey because
none of the Mylan Defendants are incorporated in New Jersey.
(Mylan Mov. Br. at 2, 6). Celgene does not appear to
challenge Mylan's assertion. (See generally
Celgene Opp. Br.) (addressing only second prong under §
1400(b)). The Court has reviewed Mylan's submissions,
including the Meckstroth Declaration (D.E. No. 56-2) and the
Jenkins Declaration (D.E. No. 56-3), and is satisfied that
the Mylan Defendants do not “reside” in New
Jersey for purposes of § ...